A New Era for IP Owners:
Confronting the Penalties of Globalization

April 25-27, 2018
Sheraton Palo Alto

As we reap the benefits of globalization, tapping diverse pools of talent around the world while selling products in new markets, our opportunities are fraught with risk, challenges, and even penalties.  Collaborating with foreign inventors requires juggling competing laws around IP ownership.  Selling and licensing IP rights in multiple regions with differential pricing complicates RAND royalty calculations. Today, a legal victory in E.D. Texas can have little impact on a market place where global litigation is increasingly central.  Meanwhile, changing U.S. policies seem to be embracing Cold War-era protectionism.  We must tread carefully in order to create and protect IP on a global scale without penalty, at home as well as abroad. What can we do now to prepare for change? Join your peers at the annual Silicon Valley IP law conference.  Space is limited. Register now!

Other Agenda Highlights:

  • The Rise of Collective Licensing as Alternative to Litigation
  • Trade Secrets: When to Call the F.B.I.?
  • Open Source Security Issues
  • USPTO New Leadership, Big Changes Afoot
  • Where to File for Patent Protection, and Why?
  • and more!

DETAILED AGENDA

(as of February 2nd. Please check back for agenda updates.)

TUESDAY, April 24th

5:30-9:30PM
Advisory Board's Cocktail Reception & Welcome Dinner for Corporate Counsel
  (By invitation only. Space is limited.)
 

WEDNESDAY, APRIL 25th

8:30-9:00AM
Breakfast and Registration

 

9:00-9:10AM
Welcome

 

9:10-10:05AM
Patent Protection’s Swinging Pendulum in A Whole New World

Patent protection in America is impacted by legal, political, and economic changes. Over the past year, we have inaugurated a new Administration, Brexit became a reality, the U.S. Supreme Court has been tackling many types of IP questions, District Court litigation filings have declined, the USPTO is preparing for new leadership, and just as we are coming to grips with the IPR process, its constitutionality is now at issue. How is the pendulum of U.S. patent protection swinging in this whole new world?

  • What is the impact of U.S. and global political and economic factors on the IP landscape?
  • New USPTO Director: What changes are on the horizon?
  • What legislative changes might we expect?
  • What judicial trends do we see?
  • What can we do now to prepare for change?

Panel: 

 

 

Jill Bowman
Associate General Counsel, IP
Intel Corp.

Dana Colarulli.jpg
 

Dana Robert Colarulli
Director of the Office of Governmental Affairs
USPTO

 

mark lemley.jpg
 

Mark Lemley
William H. Neukom Professor of Law
Stanford Law School

 

taraneh maghame.jpg
 

Taraneh Maghame
Senior Director, Wireless Programs
Via Licensing Corporation

 

randall ray rader small.jpg
 

Hon. Randall Ray Rader (Ret.)
Chief Judge
U.S. Court of Appeals for the Federal Circuit

 

brent_yamashita.jpg
 

Brent Yamashita
Partner
DLA Piper


 

10:05-10:50AM
Valuing Patent Litigation Worldwide: Current Trends in Patent Damages

Speaker:

neel chatterjee.jpg
 

Neel Chatterjee
Partner
Goodwin Procter

 

10:50-11:05AM
Coffee Break

 

11:05AM-12:00PM
Evolving Litigation and IPR Strategies

Pursuing an IPR is expensive, and with the constant changes in IP law, there are many moving parts to consider before a defendant should respond to a complaint.  Is this a case where you want to pursue an IPR?  Do you stand a strong chance of success based on non-infringement, or § 101 or § 112 defenses?  If you want to pursue an IPR, how soon should you do it?   And should you attack all patents or just some? Should you stay the case?  If you seek a motion to transfer, how do you time that with the venue question and other defenses? Find out how companies are juggling these moving parts.

Panel:

Deanna Kwong 2018.jpg
 

Deanna Kwong
IP Litigation Counsel
HP Enterprise
 

bryan sinclair.jpg
 

Bryan Sinclair
Senior Director, IP Litigation
Cisco
 

wayne stacy.jpg
 

Wayne Stacy
Partner & Dept. Chair -IP (San Francisco)
Baker Botts
 

nathan walker.jpg
 

Nathan Walker
Senior Director of Litigation

Sony Interactive Entertainment

 

12:00PM
Luncheon Begins
 

12:30-1:15PM
Luncheon Keynote: "The Role of the Judiciary in Modern Times - IP Law & Beyond
. Calculating Royalty Rates and More"

We are honored to welcome Hon. James L. Robart as our Luncheon Keynote Speaker. Judge Robart's decision in Microsoft v. Motorola marked the first time a U.S. Court made a determination of RAND licensing terms for a standard-essential patent (SEP) portfolio license between two parties.  The Judge's decision also set a precedent for how to determine RAND terms for a patent portfolio.  As technology evolves and industries try to implement new standards, we are increasingly grappling with how to determine RAND licensing terms for SEPs, making Judge Robart’s decision ever-relevant.

More recently, Judge Robart issued a temporary nationwide injunction against an executive order that sought to implement a travel ban against foreigners from certain nations.  Silicon Valley was concerned that the executive order would negatively impact its employees as well as the high-tech industry’s ability to recruit and retain talent from around the world.  As the Judge stated, "the Constitutional role of the Judiciary in our tri-part government is to ensure actions taken by the Executive and Legislative branches comport with our Laws and Constitution."

Please join us in welcoming Judge Robart as he shares his views on determining RAND licensing terms, as well as the Judiciary's role in IP law and other issues facing us in modern times.

Luncheon Keynote:

James_L._Robart.jpg
 

Hon. James L. Robart
District Judge
District Court for the Western District of Washington

 

1:15-2:10PM
Establishing Licensing Fees in a Whole New World: The Rise of Collective Licensing

In our new reality, companies are manufacturing and selling products outside the U.S., and there is increasing litigation in Europe and Asia. The patent landscape is vastly different, and companies are reluctant to expend energy or resources on mutually destructive litigation. What lessons did we learn from the smart phone wars, and how do we avoid the same mistakes as we enter a new IP landscape with new technologies and an increasingly global market place?  Join us for a discussion on how companies are embracing collective licensing as a tool for avoiding litigation.

Moderator:

joe siino.jpg
 

Joseph Siino
President
VIA Licensing Corporation

Panel:

bill geary.jpg
 

Bill Geary
Vice President
MPEG LA
 

Mark Joy.jpg
 

Mark Joy
IP Attorney & Member
Leydig, Voit & Mayer

 

kenneth korea.jpg
 

Kenneth Korea
SVP & Head of US IP Center (Silicon Valley)
Samsung Electronics
 

Mike Lee revised.jpg
 

Michael Lee
Head of Patents
Google

 

2:10-3:05PM
Developing an IP Strategy and Portfolio in a Global Marketplace

Obtaining and maintaining patent assets is expensive.  IP litigation District Court filings have declined. The market for patent sales has constricted.  The Alice decision and PTAB proceedings have opened the door to patent validity challenges while making new patents harder to attain.  In this new environment, how are companies adjusting their patent strategies?  What are the challenges of maintaining a global IP portfolio?

Panel:

miku mehta.jpg
 

Miku Mehta
Partner
Procopio Cory Hargreaves & Savitch

 

sunjay mohan.jpg
 

Sunjay Mohan
VP, Head of Global Patent Group
SAP

 

elizabeth morris small.jpg
 

Elizabeth Morris
Assistant General Counsel & Director of IP Law
KLA-Tencor Corp.

 

Untitled 2.jpg
 

Michelle Park
Senior Patent Counsel
Google

 

 

3:05-3:15PM
Coffee Break


3:15-4:10PM
IP Counsel As Business Advisor: Balancing Litigation Risk and Business Opportunity

As IP assets increasingly become the core value of today’s companies, IP Counsel play a greater business role within their organizations.  But how do you balance your role of legal advisor with the increasing business advisor role? How do you assess litigation risk when making business decisions?  How do you frame pre-litigation issues to your business leaders? What is the best way to get business support for or against litigation?  If your patents are potentially being infringed, how do you present the case? How do you frame legal risk in a way that is helpful for making business decisions?

Panel:

Brett Alten.jpg
 

Brett Alten
SVP, Deputy General Counsel & Chief IP Counsel
HP Enterprise

 

rick chang.jpg
 

Rick Chang
Partner
Foley & Lardner

 

mark freeman.jpg
 

Mark Freeman
Deputy General Counsel
Hollingsworth & Vose Company

 

kanda ishihara.jpg
 

Kanda Ishihara
Senior Corporate Counsel
Veritas Technologies

 

erin mehta.jpg
 

Erin Mehta
Counsel, Litigation and Patents
Hulu

 

john mulgrew.jpeg
 

John Mulgrew
Global Head of IP
Uber


 

4:10-5:00PM
Negotiating Indemnity in Software and Hardware Licenses

This panel will discuss strategies for negotiating around IP indemnity clauses in software and hardware licenses. What are alternative ways to get protection if the other company refuses to indemnify you? How to deal with combination claims? How can you structure indemnity in joint development agreements when you offer licenses to the non-owner? What works for both sides?

Panel:

Untitled 2.jpg
 

Christopher Kurpinski
Patent Attorney

Tektronix
 

chia la hao.jpg
 

Chia-Hao La
Senior Patent Counsel
Google
 

eric maschoff.jpg
 

Eric Maschoff
Shareholder & Patent Attorney
Maschoff Brennan

 

GeorgeSimion 2016 - Copy.jpg
 

George Simion
Associate General Counsel, Sr. Director of IP
Palo Alto Networks


 

Priva Venkat.jpg
 

Priya Venkat
General Counsel
Edgewater Networks

 

 

5:00-6:00PM
Cocktail Reception.

Join us for an informal Q&A with Judge James Robart. Questions may be emailed to info@ipcounselcafe.com

James_L._Robart.jpg
 

 

THURSDAY, APRIL 26th

8:30-9:15AM
Breakfast &  Round Table to be Announced. Stay tuned!

 

9:15-10:10AM
Open Source: Recent Developments, Security Concerns, and Best Practices For Ensuring Compliance

Open source can no longer be avoided in software development, making compliance more important than ever.  Join us for a discussion on how companies are interpreting licensing terms and structuring their compliance programs in a way that is effective, reliable, and cost efficient.  What scanning tools do companies use to ensure compliance?  How can you show that the open source you are using is safe? How can you ensure security around third-party open source components?  How have other companies gotten into trouble when using or disclosing open source platforms in different countries?

Panel:

kevin brown.jpg
 

Kevin Brown
Director, IP
NVIDIA

 

duo chen.jpeg
 

Duo Chen
Director of IP
Box, Inc.

 

Untitled 2.jpg
 

Victor Huang
Senior Counsel, Products & IP
Nutanix
 

john leroy.jpg
 

John LeRoy
IP Attorney & Shareholder
Brooks Kushman


 

Michael Moore headshot.jpg
 

Michael Moore
Associate General Counsel, Products & Patents
Pure Storage

 

Coffee Cup Logo 2018.2.png
 

Theresa Ravelo
Attorney
Intel



 

10:10-10:20AM
Coffee Break


 

10:20-11:00AM
Top 10 IP Cases That You Need to Know About

Speaker:

amy van zant.jpg
 

Amy Van Zant
Partner
Orrick Herrington & Sutcliffe


 

11:00AM-11:55AM
Trends in Global High-Tech IP Litigation

As companies increasingly work with foreign inventors and do business abroad, we often find ourselves entrenched in litigation outside of the U.S.  This panel will discuss how to handle foreign litigation.  How do you choose foreign counsel?  How do you manage litigation as an outsider with little or no understanding of local laws and customs?  We will discuss recent trends and experiences litigating in different parts of the world.  What is the status of IP litigation in China and India?  What is happening in Germany?  What is the status of the UPC?  How do damages and injunctive relief differ around the world?

Panel:

bryan butler.jpeg
 

Bryan Butler
IP Counsel
IBM Research

 

ting mao chao.jpg
 

Ting-Mao Chao
Director, Patent Licensing
Dolby Laboratories
 

markus gampp.jpg
 

Dr. Markus Gampp
Partner
DLA Piper

 

Untitled 2.jpg
 

Peter O’Rourke
Managing Counsel
Oracle

 

Ben Wang 2016.jpg
 

Ben Wang
VP & Chief IP Counsel
ZTE

 

11:55AM-12:50PM
Trade Secrets:  Monitoring for Trade Secret Theft and Best Practices for Civil and Criminal Actions

The Defense of Trade Secrets Act was passed in 2016, extending protections that exist under the Economic Espionage Act of 1996.  In addition to criminal action, civil action can now be brought in federal court for trade secret misappropriation. This panel will share best practices for identifying and keeping track of your trade secrets.  How do you monitor for trade secret theft?  How do you protect trade secrets in employment agreements?  Once you’ve found evidence of theft, what do you do?  Should you pursue a civil or criminal action, or both? When should you call the FBI, and what are the consequences?  What are the pros and cons?

Panel:

diane gabl kratz.jpg
 

Diane Gabl Kratz
Senior IP Counsel
Seagate Technology

 

scott hauser.jpeg
 

Scott Hauser
Associate General Counsel, IP
Fitbit

 

brad hulbert2.jpg
 

Bradley Hulbert
Founding Partner
McDonnell Boehnen Hulbert & Berghoff

 

jen johnson.jpeg
 

Jennifer Johnson
Associate General Counsel, Specialty Products Division
DowDuPont

 

Untitled 2.jpg
 

Matthew Parrella
Assistant US Attorney
U.S. Department of Justice

 

12:50PM
Luncheon Begins


 

2:30-3:25PM
The Power of Licensing as a Tool to Move Your Business Forward

How can you effectively use licensing strategies to move your business forward?  This panel will examine how to assess your current licensing strategy to determine whether you are moving in the right direction.  Are there new ways to help your business succeed?  How can you creatively structure your IP licenses so that you can use the same IP in other commercial transactions and other licenses?  We will consider traditional cross licenses, licenses on transfer, springing licenses, and more. How do you deal with the “forever encumbrance”?  Are there other ways to achieve the same goals?  How do you deal with licenses in the context of M&As?  How can you avoid patent exhaustion?

Panel:

Archana Bhuta.jpg
 

Archana Bhuta
Assistant General Counsel
SRI International

 

james kovacs.jpeg
 

James Kovacs
Associate General Counsel, Director, IP Group
Intel Corporation

 

rob mccauley.jpg
 

Robert McCauley
Managing Partner (Palo Alto)
Finnegan Henderson Farabow Garrett & Dunner

 

sanjeev mehta.jpg
 

Sanjeev Mehta
Associate General Counsel & Director
Verizon

 

joanne suh.jpg
 

Joanne Suh
Managing Counsel, Patent Licensing Group
Intel Corporation

 

Anup Tikku.jpg
 

Anup Tikku
Associate General Counsel, Patent Litigation & Transactions
PayPal

 

 

FRIDAY, APRIL 27th

8:30AM-12:00PM

Breakfast Workshop -
Cross Border IP Transactions: Recognizing Export Control Issues in Inventorship, Open Source, and M&As

 

miku mehta.jpg
 

Speaker:

Miku Mehta
Partner
Procopio Cory Hargreaves & Savitch
 

End of Program

 

Please check back for program updates.

 

 
 

© Copyright IP Counsel Café. All Rights Reserved.